Virginia IP Law : Virginia Intellectual Property Lawyer & Attorney : Troutman Sanders Law Firm : Technology & Patent Litigation

Typically, a plaintiff can feel confident that a patent infringement claim filed in the Eastern District of Virginia against Virginia-based defendants will not be transferred – but that’s not always the case, as shown by Judge Hudson’s recent decision, found here, to transfer venue in Augme Tech’s., Inc. v. Gannett Co., Inc., et al., Case No. 3:11CV282, 2011 U.S. Dist. LEXIS 81605 (E.D.Va. July 26, 2011) (Hudson, J.).

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The jury trial regarding alleged patent infringement by Verizon's FiOS service is approaching conclusion, and Judge Jackson has issued a recent order addressing two motions for judgment as a matter of law regarding pre-suit damages.  (UPDATED 7/28 evening -- see below.)

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The conventional wisdom in the EDVA is that patent cases will not be stayed pending a petition for reexamination. Sometimes, however, a stay pending reexam will be granted, and a recent Order entered by Judge Spencer, found here, succinctly describes the appropriate circumstances for a stay.  JuxtaComm-Texas Software, LLC v. Lanier Parking Systems of Virginia, Inc.,  Case No  3:11CV299 (E.D. Va. July 21, 2011) (Spencer, J.)

As Judge Spencer states, the three factors a Court which determine whether a case should be stayed pending a reexamination are:

• Whether discovery is complete and a trial date scheduled;
• Whether a stay would simplify the matters at issue;
• Whether a stay prejudice or disadvantage the non-moving party.

The key factor is whether the reexamination has reached an advanced stage before or soon after suit is filed. In JuxtaComm, a stay was granted because the PTO had issued a Final Office Action rejecting virtually all of the claims at issue before the suit was served.

In the EDVA, it is not likely that a stay will be granted unless the PTO has rejected at least some of the claims of the patent at issue before litigation moves beyond a preliminary stage. 

If the reexamination is not filed until after suit is filed, a motion to stay in the EDVA is almost certain to be denied because of the slow pace of the reexamination process. An example of that slow pace is the NTP case, which Judge Spencer stayed in 2007.  NTP, Inc. v. T-Mobile, USA, Inc., Case No. 3:07CV548, 2007 U.S. Dist. LEXIS 82063 (Nov. 2, 2007) (found here). The NTP case remain stayed because the NTP reexaminations, filed in 2002 and 2003, still have not concluded.

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As we reported here, the trial between DuPont and a Korean competitor, Kolon Industries, relating to the alleged theft of trade secrets about DuPont’s Kevlar® fiber began on July 21.  That same day, District Judge Robert E. Payne issued a 91-page opinion (found here) sanctioning Kolon for deleting emails and files relevant to DuPont’s trade secrets claims.  Judge Payne found that “the actions taken by the key employees discussed herein were intentional, in bad faith and quite serious,” but he refused to grant default judgment as requested by DuPont and instead will instruct the jury that Kolon destroyed relevant information after learning of the suit and that such information would have been helpful to DuPont and harmful to Kolon. 

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On July 18, EDVA Judge Gerald Bruce Lee rejected MeadWestvaco’s effort to obtain the results of expert testing done by Rexam PLC shortly after it received MeadWestvaco's cease and desist letter regarding its patent for a "Fragrance Product, Dispenser and Dispenser Assembly. MeadWestvaco Corp. v. Rexam PLC, Case No. 1:10CV511, 2011 U.S. Dist. LEXIS 78028 (E.D.Va. July 18, 2011) (found here).

After receiving MeadWestvaco's cease and desist letter, Rexam hired counsel who retained two experts to test Rexam's product but Rexam decided not to identify either expert to testify at trial. MeadWestvaco moved to compel production of the test results.  Judge Lee, as Magistrate Judge Jones had done before him, dismissed all of MeadWestvaco's arguments. 

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Jury selection for the trial of DuPont’s claims against a Korean competitor, Kolon Industries, for the alleged theft of trade secrets relating to DuPont’s Kevlar® fiber is set to begin July 21 before District Judge Robert E. Payne, culminating years of criminal and civil litigation and two Fourth Circuit appeals (so far). E.I. du Pont de Nemours and Co. v. Kolon Industries, Case No. 3:09CV58- REP (E.D.Va.). The trial is set for a very un-Rocket Docket length of 27 trial days spread over eight weeks, but the public is not likely to see much of it, as the Court has issued a Notice that it will close the trial proceedings when confidential trade secret evidence is presented.

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In the most recent rulings in the long-running suit by Touchcom, Inc. for malpractice against its Canadian patent firm, Bereskin & Parr (“B&P”), Judge Cacheris recently granted partial summary judgment (found here) to B&P that Touchcom, Inc. lacked standing and denied Touchcom’s motion to reconsider that ruling (found here). Touchcom, Inc. v. Bereskin & Parr, Case No. 1:07CV114, 2011 U.S. Dist. LEXIS 72905 (E.D. Va. July 7, 2011).

The relationship between Touchcom and B&P dates back to 1987, when Touchcom retained B&P to obtain patents over its gasoline pump invention in Canada and the U.S. After a 2005 finding that its U.S. patent was invalid because certain software code was missing from the specification, Touchcom sued B&P for malpractice.

Judge Cacheris dismissed the case for lack of personal jurisdiction over B&P, but the Federal Circuit reversed, holding that under Fed .R. Civ. P. 4(k)(2) the act of filing an application for a U.S. patent at the USPTO was sufficient to subject a Canadian filing attorney to personal jurisdiction in a malpractice claim based upon that filing.  Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403 (Fed. Cir. 2009).

After remand, B&P moved for summary judgment on several grounds, but the Court granted the motion on only one ground – that Touchcom, Inc. lacked standing on the grounds that it had granted its affiliate, Touchcom Technologies, Inc. (“TTI”), the sole and exclusive right to collect proceeds from litigation enforcing patent rights. 

On a motion for reconsideration, Judge Cacheris affirmed his decision that a 2003 Amendment to the licensing agreement between Touchcom and TTI granted TTI sole rights in the patent, even though the Amendment had never been signed. Based on deposition testimony of the inventor, the Court held that the terms of the Assignment had been effected by Touchcom’s and TTI’s Boards of Directors, and so was a binding agreement that deprived Touchcom, Inc. of standing. 

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Within the hour, the second day of trial will begin in Norfolk in a patent infringement case that reaches into the home of many Americans.  At issue is FiOS, Verizon’s marquee television, Internet, and phone service.

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IPLaw360 just published an article (link below) using statistics from PACER to conclude that IP litigation is on the rise.  That made us wonder how things are going in Virginia’s federal courts.

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Laser surgery cannot remove the permanent injunction slapped on Defendants TAT International and Kirk Knapp after being found last week to have infringed copyrights on tattoo art designs.  Reaching that injunction required the Eastern District of Virginia to weigh in on splits among the federal courts and to survey the state of the law with respect to copyright remedies after the Supreme Court’s decision in Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010).

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